“Google” as trademark takes a step toward “genericide”

Yesterday the publishers of the Merriam-Webster dictionary announced that the word “google” has been added to the English lexicon as a verb, meaning “to use the Google search engine to obtain information . . . on the World Wide Web.” [Covered here on SiliconValley.com.]

Surprisingly, a Google spokesman said that the listing is “appropriate.” Is it? Perhaps Google should be concerned that widespread acceptance of the word “google” as a verb could mean that the word is becoming generic — i.e., is becoming the very name of the service the company provides. Generic terms are not subject to trademark protection.

In the case of America Online, Inc. v. AT & T Corp., 243 F.3d 812 (4th Cir. 2001), the court held that the term “IM” was not subject to trademark protection because, among other things, AOL had used the term as a verb. The court also pointed to books, dictionaries, and glossaries defining “instant message” with the “IM” designation. (The court did not, however, find IM to be generic.)

Other case law also indicates Google shouldn’t think the inclusion is “appropriate.” The Seventh Circuit advises that “[a] serious trademark holder is assiduous in endeavoring to convince dictionary editors, magazine and newspaper editors, journalists and columnists, judges, and other lexicographically influential persons to avoid using his trademark to denote anything other than the trademarked good or service.” Illinois High School Ass’n. v. GTE Vantage, Inc., 99 F.3d 244 (7th Cir. 1996).

One redeeming quality of the definition is that “googling” is limited to using Google and not conducting searches in general. But perhaps Google’s domination of the search market makes it think that when someone talks of “conducting a search” (now a/k/a “googling”), he or she could not possibly be talking about using Yahoo!, MSN, or Ask.com.

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Evan Brown is an attorney in Chicago helping businesses and individuals identify and manage issues dealing with technology development, copyright, trademarks, domain names, software licensing, service agreements and other matters involving the internet and new media.

Evan is a partner in the law firm of Much Shelist, P.C. He is an adjunct professor of law at Chicago-Kent College of Law, and is a Domain Name Panelist with the World Intellectual Property Organization (WIPO).